Judge Birss QC held that the Hearing Officer correctly decided that Wella’s earlier registered Community Trade Mark No. 55608 for SHAPER lacked all distinctive character as the evidence submitted failed to show that the mark had acquired distinctiveness through use at the date the opposed mark was filed. As this was not a finding of invalidity, the Hearing Officer had jurisdiction to rule on the matter.

The evidence of use indicated that the mark SHAPER was effectively a sub-brand for the well-known hair care brand Sebastian. Accordingly, the Hearing Officer held that the consumer would see the mark SHAPER as describing a particular type of shaping product originating from the Sebastian brand, a conclusion that the court also supported.

Alberto presented evidence to demonstrate that other traders were using the word “shaper” descriptively. This fact, which was not disputed by Wella, is what led to the finding that Wella’s mark had low or very low distinctiveness. On this basis, Judge Birss QC held that it was open to the Hearing Officer to rule that the mark lacked all distinctiveness. Accordingly, the first ground of Wella’s appeal, that a finding that SHAPER was not distinctive was analogous to the suggestion that its mark was invalid, and that invalidity was not open to the Hearing Officer as a matter of law, was dismissed.

Since neither SHAPER nor FUNKY were distinctive, Wella’s second ground of appeal that a finding that FUNKY was descriptive and laudatory invalidated FUNKY SHAPER was also dismissed. The Court judged that the Hearing Officer had rightly concluded that neither mark could be considered an indication of origin and, therefore, there was no likelihood of confusion.

Although the case illustrates the difficulties in proving acquired distinctiveness, an interesting aspect of the decision is that a mark containing the whole of an earlier registered mark was held to be registrable. Wella was unable to successfully challenge Alberto’s mark on the grounds that the subsequent mark was non-distinctive or descriptive because it would be equivalent to Wella admitting that its registration for SHAPER had the same deficiencies. As a result, Wella was forced to rely on the acquired distinctiveness of its own mark. However, if the distinctiveness of an earlier mark is found lacking at the time of the opposed mark’s application, the likelihood of confusion is far less, thereby increasing the likelihood that the challenge will be unsuccessful, as it turned out here.